Trade Mark Hearings

What is a Hearing?

A hearing is quite simply an opportunity for you, as applicant for a trade mark, to explain to us why we should accept your trade mark application, following objections raised at the Examination stage.

Although a hearing has proper legal status, we try to make them relatively informal, because we understand that for many applicants this may be their first experience of trying to get a trade mark registered, and we want to help as much as we can.

Legally, this type of hearing is described as an ex parte hearing, i.e. a formal trial of a lawsuit involving one party only - in this case the applicant for a trade mark.

Why do I need one?

The trade mark examiner who dealt with your application will have raised certain objections to it in the Examination Report which was sent to you, and have been unable to resolve these in correspondence with you. A hearing will have been suggested as a possible way of progressing matters to a conclusion.

What will it cost?

There is no charge for a hearing.

How quickly can I get one?

One of the Hearings Clerks at the Registry will contact you to arrange a suitable date, time, and venue as soon as your request is received. Hearings are generally aimed to be held within three months of the request being made. If an urgent appointment is required, you should contact the Hearings Clerk on +44 (0)1633 811027 / 811034.

Where will it be held?

Hearings are held regularly in the London and Newport offices of the Registry, and it is strongly recommend that you attend at one of these venues - the addresses are given below. Occasionally hearings are held in Manchester and Glasgow, but these take much longer to arrange. If the issues involved in an application are relatively straightforward, then a hearing may be held over the telephone. You can discuss this possibility with the Hearings Clerk.

What should I bring to the Hearing?

If you have been using your trade mark for some time on your goods/services, then it might be helpful to bring some examples of how it is being used. Figures for turnover, sales, or advertising of the mark, may also help. If the Hearing Officer thinks such evidence of use will enable the mark to be registered then it may be necessary to provide it more legally in the form of a Statutory Declaration. If appropriate, this will be explained more fully at the hearing. The Hearings Clerk can also send you an information leaflet on evidence of use.

Note - Confidentiality of documents

Any evidence supplied in support of an application must be made available for public inspection if the application is accepted and published in the Trade Marks Journal. If you do not want such information to be publicly available, then you must tell the Hearing Officer when you bring the documents to the hearing, at the same time giving your reasons for this information being kept confidential. The Hearing Officer will tell you whether your request can be allowed.

How long will the Hearing last?

Because of the volume of work that has to be dealt with, hearings are limited to no more than 30 minutes.

Who will be there?

The Patent Office will be represented by a Hearing Officer, a senior official of the Trade Marks Registry. S/he will have read the official file on your application to see what issues are involved and need to be discussed at the hearing. S/he will be familiar with all the trade mark law necessary to deal with your application.

Occasionally another official may also attend, in order to gain some experience of hearings, but in such cases you will be consulted beforehand in case you have any objections.

You may bring a friend or business partner, but you can only be legally represented by someone else, e.g. a solicitor, trade mark attorney or patent agent, if you have formally appointed them and previously notified the Registry of such an appointment.

Hearings are not open to members of the public.

What happens at the Hearing?

You will be invited to explain why you think your application should be accepted. The Hearing Officer will discuss the issues with you, in order to resolve any matters which can be dealt with there and then.

A hearing can result in one of three ways:

The Hearing Officer may accept your arguments. If so, your application will go forward for publication in the Trade Marks Journal in due course.
The Hearing Officer may not accept all your arguments. S/he will explain why not, and/or suggest ways in which the objections to your application may be overcome. If so, s/he may suspend the application for up to three months to allow you time to attend to these matters.
The Hearing Officer may think that the objections to your mark are so strong that the mark is definitely not registrable. In this case, s/he will refuse your application, or invite you to withdraw it.

In all cases, you will be told the Hearing Officer's decision at the hearing.

What happens after the Hearing?

You will be sent a written confirmation of the hearing result within about two weeks.

If the mark has been accepted or withdrawn, you need take no further action.
If the application has been suspended, you must attend to the issues identified at the hearing within the time stated. Further extensions of time may be allowed beyond that, but you will have to request such extensions before the end of each time period. You will also have to give reasons for each request.
If the application has been refused, and you do not agree with the Hearing Officer's decision, you may request a Statement of grounds of decision within one month of the date on which the decision was sent to you. The Hearing Officer will prepare a full written decision, explaining why the mark has been refused, including reference to relevant trade mark law as laid down in Acts of Parliament and previously decided court cases, and you will be sent a copy. If you still wish to challenge the decision, you will be advised of your further rights of appeal at that time.